DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Response of 5 Feb. 2026 has been entered.
Claims 1-31 are currently pending.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-16, and the species of: polypeptide as the biological molecule, DNA as the cell-free precursor, SECYEG as the translocon protein, and post-translation translocation in the reply filed on 5 Feb. 2026 is acknowledged.
Claims 7, 9, 15 and 17-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (claims 7, 9 and 15) and invention (claims 17-31), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5 Feb. 2026.
Claims 1-6, 8, 10-14 and 16 are considered here with respect to the elected species.
Claim Objections
Claim 14 is objected to because of the following informalities:
The term "sad" in claim 14 should be replaced with "said".
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites "wherein at least a portion of said protein is formed in said first portion and folded in said second portion". There is insufficient antecedent basis for said "first portion" and "second portion" in claims 1/10 from which claim 11 depend, making it unclear how claim 11 further limits the claim.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6, 8, 10, 13, 14 and 16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Matsubayashi et al., Angewandte Chemie 126.29 (2014): 7665-7668.
Regarding claims 1-3, 8, 10 and 16, Matsubayashi teaches a method for generating a biological molecule (proteins, including pOmpA and LepB) via cell-free synthesis, comprising: (a) providing a test tube (i.e. chamber) comprising a plurality of cell-free protein precursors including DNA templates and a proteoliposome comprising a bilayer lipid membrane with the translocon pore protein SecYEG inserted therein; (b) using at least a subset of said plurality of cell-free precursors to form said protein; and (c) subsequent to (b), translocating at least a portion of said protein through said pore into said proteoliposome (p. 7536, last ¶ to p. 7537, last full ¶; Fig. 2; Supp. Materials and Methods, under Cell-free protein synthesis, Scheme 2, Figs. S5, S8).
Regarding the recitation in step (c) that the translocating is subsequent to the synthesis in (b), Matsubayashi teaches that the SecYEG-mediated protein translocation step occurs independently from the protein synthesis and demonstrates that the translocation can be carried out simultaneously with, or subsequent to (via the addition of antibiotics or RNase), the protein synthesis (p. 7537, 1st ¶; Fig. S5). As such, it would have been obvious to carry out any additional steps, such as those in dependent claims 4-6 and 12, in combination with simultaneous or subsequent translocation.
Regarding claim 4, Matsubayashi teaches conducting proteolysis analyses on the cell-free synthesis system in order to assess the extent of translocation (wherein proteins translocated into the proteoliposome are protected from proteolysis and non-translocated proteins are not), where the analysis involves centrifugation of the reaction mixture followed by SDS-PAGE analysis (Supp. Materials and Methods, under Cell-free protein synthesis; Fig. S9). It would have been obvious in carrying out such post-reaction analyses to remove the proteoliposomes from the reaction chamber, e.g. to place them into centrifuge tubes or the like.
Regarding claims 5-6, Matsubayashi teaches that the synthesized pOmpA protein comprises an N-terminal translocation signal sequence that can be cleaved from the protein following translocation by a signal peptidase (LepB) inside the proteoliposome (p. 7537, right col., 1st full ¶; Fig. S7).
Regarding claim 13, Matsubayashi teaches that the protein was synthesized using a cell-free in vitro translation system which would not include any of the synthesized proteins (Supp. Materials and Methods, under Cell-free protein synthesis).
Regarding claim 14, Matsubayashi teaches that the proteins were translocated in their entirety into the inside of the proteoliposome (p. 7537, 1st ¶; Supp. Materials and Methods, Scheme 2).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Matsubayashi, as applied to claims 1-6, 8, 10, 13, 14 and 16, in view of US Patent 5478730 to Alakhov et al.
Claim 12 differs from Matsubayashi, as applied to claims 1-6, 8, 10, 13, 14 and 16, in that: the reaction chamber is part of a flow channel.
Alakhov teaches a reactor system for cell-free protein synthesis comprising a reaction chamber containing precursors for protein synthesis (e.g., templates, etc.), wherein the chamber has a porous wall (e.g., a porous membrane) that allows for high molecular weight molecules (e.g., DNA, proteins) to be retained in the chamber while lower molecular weight byproducts can pass through the barrier and be removed from the chamber (e.g., mono-/di-phosphates from consumption of ATP) and/or be replenished by passage into the chamber from an external solution (e.g., ATP, dNTPs, etc.) (col. 2, line 55 to col. 5, line 40; Examples). The reaction chamber can be a hollow-fiber reactor surrounded by a continuously flowing external solution (i.e. a flow channel; cf. instant specification, which describes a hollow fiber reactor as an example of a chamber in a flow channel (Published Spec. US20240271173, [0052])) (col. 5, lines 4-40). The reactor system can greatly extend the reaction time for cell-free synthesis and can provide for higher ratios of protein product to template (col. 4, lines 60-67; col. 10, lines 44-63).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to carry out a cell-free synthesis reaction in which an expressed protein is translocated via a SecYEG membrane pore into a proteolipisome as taught by Matsubayashi (e.g., for expression of a membrane protein) wherein the reaction chamber is a hollow fiber reactor as taught by Alakhov because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of ordinary skill would have been motivated to use a hollow fiber reactor as taught by Alakhov to carry out the method of Matsubayashi because Alakhov teaches that such a reactor can greatly extend the reaction time for cell-free synthesis and provide for higher ratios of protein product to template by allowing for removal of expended materials and replenishment of low molecular weight precursors. Using a hollow fiber reactor as taught by Alakhov to carry out the method of Matsubayashi would have led to predictable results with a reasonable expectation of success because Alakhov teaches that the reactor can be used to prepare any protein of interest including membrane receptors (Alakhov, col. 7, lines 1-14), and one of ordinary skill would expect the reaction components in the method of Matsubayashi to be compatible with any type of reaction chamber.
Conclusion
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/ROBERT J YAMASAKI/Primary Examiner, Art Unit 1657